Thursday, June 22, 2017

TTABlog Test: Is GOLDENBERRY Merely Descriptive of Fresh Fruit?

The USPTO refused registration of GOLDENBERRY, finding the applied-for mark to be merely descriptive of "fresh fruits." Applicant appealed, arguing that its fruit is yellow, not golden, and is properly called “Gooseberry” or “Cape Gooseberry.” How do you think this came out? In re Volcano Produce, Inc., Serial No. 86321169 (June 20, 2017) [not precedential] (Opinion by Judge Quinn).

Examining Attorney Michael Eisnach maintained that GOLDENBERRY merely describes Applicant’s fruit: a berry that is golden in color. He pointed to use of the term by the media and by others in the fruit industry, as well as to dictionary excerpts, an item from Wikipedia, portions of Applicant’s website, and third-party website pages. The Board highlighted three examples of Internet use:

"Though new to the market in the U.S., golden berries have a long history of exportation and use in Europe, the Middle East, and China." (renegadehealth.com)

"Once you learn about aronia berries and golden berries, both of which are increasingly available in stores and online, you’ll be chomping at the bit to sample them. (people.com);

"Golden berries, also known as Physalis peruviana, is South American fruit that’s highly concentrated with nutrients and bioactive compounds." (globalhealingcenter.com).

Applicant argued that "[a] fair degree of imagination is required to make the leap from the mark to what goods are involved," but the Board pointed out for the umpteenth time that the mark must be considered not in the abstract but in the context of the identified goods.

The record confirmed that applicant's fruit is also called "Cape Gooseberry" and "Gooseberry," but, of course, a product may be described by more than one merely descriptive term or may have more than one name. The evidence "clearly shows that another commonly used name for the fruit is 'goldenberry' or 'golden berry.'" And that was not all she wrote:

In addition to being the name of the fruit, the evidence establishes that the term is merely descriptive of a berry that is golden in color ("deep yellow" as described in the dictionary ...).

Applicant mainly relied on the U.S. Department of Agriculture’s Fresh Fruit and Vegetables Manual (2d ed. 2012), which includes listings for "Cape Gooseberry" and "Gooseberry, but no entry for "goldenberry" or golden berry." Applicant contended that "the gossamer wings of tabloid pages [Applicant’s characterization of the Examining Attorney’s evidence] should [not] be allowed to serve as a substitute for the agricultural oracle that is the USDA." The Board was not impressed.

Notwithstanding this omission, the plethora of recent third-party uses of the term “goldenberry” in the fruit industry outweighs the probative value of this manual, which was issued five years ago.

Considering all the evidence, the Board concluded that GOLDENBERRY is merely descriptive of fresh fruit.